1016 International Registration As Basis for §44 Application
An international registration issued by the International Bureau of the World Intellectual Property Organization ("IB") can be the basis for a §44(e) application only if the international registration shows that there is an extension of protection of the international registration to applicant’s country of origin. See TMEP Chapter 1900 regarding international registration. A request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
An applicant should submit a copy of the registration (or certificate of extension of protection) issued by the national trademark office in the applicant’s country of origin. See15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii). If the applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration, showing that protection of the international registration has been extended to applicant’s country of origin. A copy of a request for an extension of protection of the international registration to applicant’s country of origin is not sufficient.
If the grant of protection, registration, or certificate of extension issued by the designated trademark office of the applicant’s country of origin does not specify goods/services for which protection has been granted, the applicant should submit both an extract of the International Register issued by WIPO that lists the goods/services of the international registration and the document issued by the designated trademark office to establish the scope of protection of the §44(e) application. A user-generated printout from the WIPO database is not sufficient.
If the applicant is not domiciled or incorporated in the relevant country, the examining attorney must require the applicant to establish that the country is its country of origin. See TMEP §1002.04.
The applicant must meet all the requirements of the Trademark Act and the Trademark Rules of Practice for §44(e) applications. The requirements for §66(a) applications are not applicable.
The identification of goods/services covered by the §44(e) basis may not exceed the scope of the goods/services identified in the registered extension of protection in the applicant’s country of origin. 37 C.F.R. §2.32(a)(6); TMEP §1012.
An extension of protection of an international registration may not be the basis for a §44(d) application, because neither the international application nor the request for extension of protection is the first application filed in a treaty country for the same mark for the same goods or services. 15 U.S.C. §1126(d); 37 C.F.R. §2.34(a)(4)(i)(A)-(B); TMEP §1003.01. The basic application or basic registration upon which the international registration is based was likely the first-filed application.
If an applicant wants to base a §44(e) application on the basic registration that was the basis for the international registration, the applicant must submit a copy of the basic registration issued by the Office of Origin, i.e., the country or intergovernmental organization who issued the registration which provided the basis for the international registration (see TMEP §1901 regarding the Office of Origin). The applicant cannot submit the international registration, because an international registration does not provide protection in the territory of the Contracting Party whose office is the Office of Origin. Madrid Protocol Article 3 bis.